Ex Parte Park et al

Patent Trial and Appeal Board

Dec 10, 2012

10678750 (P.T.A.B. Dec. 10, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/678,750 10/03/2003 Kyoung-hwan Park 1293.1950 6605
21171 7590 12/11/2012
STAAS & HALSEY LLP
SUITE 700
1201 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
BIBBINS, LATANYA
ART UNIT PAPER NUMBER
2695
MAIL DATE DELIVERY MODE
12/11/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KYOUNG-HWAN PARK, EUN-GOO KIM,
PYONG-YONG SEONG, and CHUL-HO JEON
____________________

Appeal 2010-006556
Application 10/678,750
Technology Center 2600
____________________

Before ERIC B. CHEN, MICHAEL J. STRAUSS, and LARRY J. HUME,
Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1, 3, 4, 6, 7, and 9-23. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

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Application 10/678,750

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STATEMENT OF THE CASE 1
The Invention
Appellants’ invention is directed to an apparatus and method for
generating a tracking error signal and optical recording/reproducing system
and, more particularly, to an apparatus and method for stably generating a
tracking error signal regardless of a track pitch distance of a disc. Spec. p. 1,
Title and ¶ [0002].
Exemplary Claim
Claim 1 is an exemplary claim representing an aspect of the invention
which is reproduced below (emphasis added to disputed limitations):
1. A tracking error signal generating apparatus
comprising:
a main beam push pull (MPP) signal generating unit
which generates an MPP signal according to electrical signals
output by main photodetecting units based on a calculated
deviation of beam powers detected by the main photodetecting
units arranged on right and left sides of a specific track,
respectively;
a side beam push pull (SPP) signal generating unit which
generates an SPP signal . according to electrical signals output
by photodetecting units based on a calculated deviation of beam
powers detected by the photodetecting units, the photodetecting
units being one of pairs of the main photodetecting units
diagonally arranged with respect to the track and side

1 Our decision refers to Appellants’ Appeal Brief (“App. Br.,” filed
Aug. 31, 2009); Reply Brief (“Reply Br.,” filed Feb. 12, 2010); Examiner’s
Answer (“Ans.,” mailed Dec. 11, 2009); Final Office Action (“FOA,”
mailed Nov. 26, 2008); and the original Specification (“Spec.,” filed
Oct. 3, 2003).
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photodetecting units disposed on opposing sides of the track
and outside of the main photodetecting units;
a high-pass filter which removes an AC component
from the SPP signal such that only DC components of the
SPP signal remain; and
a subtractor which generates a tracking error signal by
calculating a difference between the MPP signal and the DC
components of the SPP signal,
wherein the high-pass filter is connected in series
between an output terminal of the side beam push pull signal
generating unit and a ground terminal.
Prior Art
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Deguchi US 4,787,076 Nov. 22, 1988
Applicant's Admitted Prior Art (Official Notice not properly
challenged).
High and Low Pass Filters,
http://www.mtholyoke.edu/courses/pdobosh/i1
02_2006/high%20and%2010w%20pass%20filters.html (last visited
11/23/08).
Low-pass Filter, Wikipedia, http://en.wikipedia.org/wiki/Low-
pass_filter (last visited 11/23/08).
High-pass Filter, Wikipedia, http://en.wikipedia.org/wiki/High-
pass_filter (last visited 11/23/08).
Joe Wolfe, School of Physics, The University of New South Wales,
RC Filters, Integrators and Differentiators,
http://www.physclips.unsw.edu.au/jw/RCfilters.html (last visited
11/23/08).
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Rejection on Appeal2
Claims 1, 3, 4, 6, 7, and 9-23 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Deguchi in view of Applicants’ Admitted Prior Art
(AAPA). Ans. 4.
Based upon Appellants’ arguments against the rejection focusing on
independent claim 1 and their acknowledgement of the similarity of the
recited features in independent claims 1, 4, 7, 10, 11, 14, 17, 20, and 23
(App. Br. 16), and based on our authority under 37 C.F.R. §41.37(c)(1)(vii),
we select independent claim 1 as the representative claim to decide this
appeal for all claims on appeal.
ISSUE AND ANALYSIS
Appellants’ contentions in the Appeal and Reply Briefs (App. Br. 14-
20; Reply Br. 4-8) present us with the following issue:
With respect to the recitation in independent claim 1 of “a high-
pass filter which removes an AC component from the SPP
signal such that only DC components of the SPP signal
remain,” did the Examiner err in taking official notice that
“providing a low-pass filter in series with a signal output results
in the equivalent frequency response as connecting a high-pass
filter to ground at the signal output (i.e. removing AC
components from a signal and allowing DC components to
pass)”?

2 The Examiner has objected to dependent claims 2, 5, and 8 as being
dependent upon a rejected base claim, and has indicated that these claims
would be allowable if rewritten into independent form. Therefore, these
claims are not before us as part of this Appeal. (Ans. 2.)
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We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions with respect to claim 1, and we adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken and (2) the reasons and rebuttals set forth by the Examiner in
the Examiner’s Answer (Ans. 4-6, 17-21) in response to Appellants’
Arguments (App. Br. 14-20). However, we highlight and address specific
findings and arguments regarding claim 1 for emphasis as follows.
In particular, we concur with the Examiner’s finding that “providing a
low-pass filter in series with a signal output results in the equivalent
frequency response as connecting a high-pass filter to ground at the signal
output (i.e. removing AC components from a signal and allowing DC
components to pass)” (Ans. 5, 17 (emphasis ours)).
We also agree with the Examiner that Appellants did not traverse the
taking of Official Notice in a proper and timely manner.3 To adequately
traverse such a finding, an applicant must specifically point out the supposed
errors in the Examiner’s action, which would include stating why the noticed
fact is not considered to be common knowledge or well-known in the art.
See 37 CFR 1.111(b). See also In re Chevenard, 139 F.2d 711, 713 (CCPA
1943) (“[I]n the absence of any demand by appellant for the examiner to
produce authority for his statement, we will not consider this contention.”).

3 As stated by the Examiner, “[i]n the Office Actions mailed on June 12,
2007, November 13, 2007, and May 2, 2008 Examiner took Official Notice
that ‘providing a low-pass filter in series with a signal output results in the
equivalent frequency response as connecting a high-pass filter to ground at
the signal output (i.e. removing AC components from a signal and allowing
DC components to pass).’” Ans. 17.
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We do not find Appellants’ “implicit” traversal discussed in the Appeal
Brief (App. Br. 15) to have been properly set forth as indicated by the
Examiner.
However, even assuming, arguendo, that Appellants’ traversal was
properly made, we also find that Appellants’ arguments are not persuasive.
In particular, we disagree with Appellants’ characterization of the
Examiner’s position, and are not persuaded by Appellants’ argument:
While the Examiner has provided support that low pass filters
and high pass filters are similar in that they may maintain the
same elements in different positions, the Examiner has failed to
provide proper support for the assertion that a low pass filter in
series results in the equivalent frequency response as a high-
pass filter to ground. A low pass filter and a high pass filter
provide for different frequency responses, particularly as to
what frequency components are able to pass through the filter.
App. Br. 14 (emphasis omitted). In response to Appellants’ contention, we
point out that the Examiner has previously addressed this issue:
Applicant misquotes and improperly characterizes the Official
Notice taken by the Examiner by stating that the Examiner took
Official Notice of “a high-pass filter which removes AC
components from the SPP signal.” However, in the Office
Actions mailed on June 12, 2007, November 13, 2007, and
May 2, 2008 Examiner took Official Notice that “providing a
low-pass filter in series with a signal output results in the
equivalent frequency response as connecting a high-pass filter
to ground at the signal output (i.e. removing AC components
from a signal and allowing DC components to pass).”
FOA 2.
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Thus, while we acknowledge that high pass and low pass filters are
inherently different when viewed outside a specific hardware and circuit
implementation, we also agree with the Examiner’s finding that “a low-pass
filter in series with a signal output results in the equivalent frequency
response as connecting a high-pass filter to ground at the signal output.”
This finding is not the same as Appellants’ contention, which ignores the full
context and Examiner’s statement (supra) of how the low-pass and high-
pass filters are differently connected to achieve the same filtering effect.
Further to this point, we disagree with Appellants’ contention that
“the Examiner provides no support that providing a low-pass filter in series
with a signal output results in an equivalent frequency response as a high-
pass filter in series between a signal output and a ground terminal.” App.
Br. 16. In fact, and as pointed out by the Examiner (Ans. 15), Appellants’
Specification acknowledges this well-known fact by disclosing that:
Referring to FIG. 7, a filter 703 is connected to an output
terminal of the SPP signal generating unit 702 and removes an
AC signal component from the SPP signal. As a result, only
DC components of the SPP signal are input to a subtractor 704.
That is, the filter 703 is designed to have high-pass filtering
characteristics or band-pass filtering characteristics. However,
when the filter 703 is positioned in series between the SPP
signal generating unit 702 and the subtractor 704, the filter
703 is designed to have low-pass filtering characteristics.
Spec. ¶ [0042] (emphasis added).
Thus, we find that Appellants’ arguments that the Examiner erred,
supra, are not persuasive, particularly in light of Appellants’ admission in
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their Specification that an alternative filter implementation using a low-pass
filter in series is equivalent to a high-pass filter in parallel.
Furthermore, we agree with the Examiner’s finding with respect to the
limitation “such that only DC components of the SPP signal remain.”
Since the realization of filters is not ideal, the interpretation of
one of ordinary skill in the art would be that the high-pass filter,
connected in series between the output terminal of the side
beam push pull signal generating unit and a ground terminal,
removes an AC component (beginning at the cutoff frequency)
from the SPP signal such that DC components (as well as the
low frequency components up to the cutoff frequency) of the
SPP signal remain.
Ans. 20-21.
Furthermore, we find that Appellants’ arguments (Reply Br. 5, line 9
et seq.), even if considered, are not persuasive.4 For example, Appellants’
argument that “the differential circuit 110 of Deguchi is not a subtractor
which generates a tracking error signal by calculating a difference between
the MPP signal and the DC components of the SPP signal” (emphasis
omitted), is not persuasive in light of the Examiner’s finding related to filter
realization and filter cutoff frequency, cited supra, and Appellants’ Admitted
Prior Art.

4 These arguments are deemed waived. Appellants have not explained why,
nor is it apparent that, these arguments were necessitated by a new point in
the Answer or any other circumstance constituting “good cause” for its
belated presentation. See Ex parte Borden, 93 USPQ2d 1473, 1473-74
(BPAI 2010) (“informative” ) (absent a showing of good cause, the Board is
not required to address argument in Reply Brief that could have been
presented in the principal Brief).
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Therefore, we sustain the Examiner’s rejection of claims 1, 3, 4, 6, 7,
and 9-23.
CONCLUSIONS
(1) Appellants have not established that the Examiner erred with
respect to the unpatentability rejection of claims 1, 3, 4, 6, 7, and 9-23, and
the rejection is sustained.
(2) Dependent claims 2, 5, and 8 are not before us on appeal, and
form no part of our decision.
DECISION
The decision of the Examiner to reject claims 1, 3, 4, 6, 7, and 9-23 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

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